DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of the Claims
Claims 1-16 are pending. Claims 7-12 are withdrawn. New claims 13-16 are objected. Claims 1-6 are rejected.
Response to Amendment/Arguments
The amendment filed October 15, 2025 is compliant with the requirements of 37 CFR 1.121(c), accordingly the amendment has been entered.
Applicant’s remarks have been fully considered and addressed below:
35 USC § 112 Rejections
The rejection of claim 3 under 35 USC 112(b) has been overcome by deleting “linked by O” from the indefinite limitation in claim 3. The rejection has been withdrawn.
35 USC § 102 Rejections
The rejection of claims 1-2, 4 and 6 under 35 USC 102(a)(1), for being anticipated by Registry No. 13909-96-1,
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, has been overcome by deleting unsubstituted phenyl from R1 of Formula 1,
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. The rejection is withdrawn.
The rejection of claims 1 and 3-6 under 35 USC 102(a)(1), for being anticipated by compound 5,
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, of Verderame (1966), has been overcome by removing phenyl-substituted piperazinyl from R1 of Formula 1,
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. The rejection is withdrawn.
Scope of the Elected Invention
As previously indicated, on page 3 of the Office Action mailed on August 5, 2025, the following subgenus of Formula 1 was found allowable over the prior art:
R1 is tetrazolyl, phenyl linked by O (the phenyl being substituted by alkoxy or phenoxy) or benzodioxolyl linked by O (the benzodioxolyl being substituted by halogen, alkoxy, phenyl, or phenoxy).
New claims 13-16 are drawn to embodiments within this allowable subgenus. Therefore, claims 13-16 are allowable over the prior art.
In accordance with the MPEP 803.02, examination of the Markush-type claims has been extended, as necessitated by amendment, to determine the patentability of Formula 1,
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. The search was extended to include the following subgenus:
R1 is phenyl linked by O (the phenyl being substituted with haloalkyl) and R2 is phenyl
substituted with alkyl,
and
R1 is piperazinyl (substituted with alkoxycarbonyl) and R2 is substituted phenyl.
These compounds are not allowable over the prior art. Since prior art was found, claims 7-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(1 of 2) Claims 1-2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Service (CAS) Registry No. 1007721-85-8, STN Database (Entered: March 13, 2008).
CAS teaches the compound
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, which has the same structure of instant Formula 1,
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, wherein R1 is phenyl linked by O, said phenyl is substituted with C1 haloalkyl, R2 is phenyl disubstituted with C1 alkyl, R3 is H, and R4 is H; therefore, anticipating claim 1.
Claim 2 reads on the CAS compound wherein R1 is phenyl linked by O, said phenyl is substituted with one C1 haloalkyl.
Claim 4 reads on the CAS compound wherein R2 is phenyl disubstituted with C1 alkyl.
Claim 6 reads on the CAS compound wherein R3 is H, and R4 is H.
(2 of 2) Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agarwal et al. J. Prakt. Chem. 1970, 312, 964-967.
Teaches compound 18 of the structure
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, wherein R1 is m-methoxyphenyl and R2 is CO2Et. See Table 1. Compound 18 has the same structure of instant Formula 1,
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, wherein R1 is piperazinyl monosubstituted with C2 alkoxycarbonyl, R2 is phenyl substituted with C1 alkoxy, R3 is H, and R4 is H; therefore, anticipating claims 1 and 3. (Claim 3 does not exclude piperazinyl for R1.)
Claims 4 and 5 read on compound 18 wherein R2 is phenyl substituted with one C1 alkoxy.
Claim 6 reads on compound 18 wherein R3 and R4 are H.
Allowable Subject Matter
Claims 13-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. These claims are drawn to compounds of Formula (I)
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, wherein: R1 is tetrazolyl, phenyl linked by O (the phenyl being substituted by alkoxy or phenoxy) or benzodioxolyl linked by O (the benzodioxolyl being substituted by halogen, alkoxy, phenyl, or phenoxy), which are allowable over the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L AGUIRRE whose telephone number is (571)272-5592. The examiner can normally be reached 10 am-6 pm MST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JEFFREY H. MURRAY can be reached on 571-272-9023. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AMANDA L. AGUIRRE/ Primary Examiner, Art Unit 1626
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